USPTO Patents Application 09870801

F I N N EG AN
HENDERSON
FARABOW
GARRETT &
DUNNERLLf

1300 I Street, NW
Washington, DC 20005
202.408.4000
Fax 202.408.4400
www.fi nnegan .com

PATENT
Gustoraer No. 22,852'
Attorney Docket No. 7451.0001-18
InterTrust Ref. No.:' 5.2.1.1 (US)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of:
Karl L. GINTER et al.
Application No.: 09/870,801
Filed: June 1,2001

For: SYSTEMS AND METHODS FOR
SECURE TRANSACTION
MANAGEMENT AND
ELECTRONIC RIGHTS
PROTECTION

Group Art Unit: 2132
Examiner: Justin T. Darrow

BECKED

0 4 2003

Cert*

2100

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Sir:

SECOND UPDATED NOTICE REGARDING RELATED LITIGATION

Further to the submission of the Updated Notice Regarding Related Litigation on
April 3, 2003, Applicants submit this Second Updated Notice to inform the Examiner of
the status of the ongoing legation between InterTrust and Microsoft, captioned
InterTrust Tech. Corp. v. Microsoft Corp. (C 01-1640 SBA, N. D. Ca.). Applicants also
submit copies of papers exchanged by the parties in the course of this litigation. Many
of these papers relate to claim construction.

STATUS OF RELATED LITIGATION

F I N N EG AN
HENDERSON
FARABOW
GARRETT &
DUNNERkif

1300 I Street, NW
Washington, DC 20005
202.408.4000
Fax 202.408.4400
www.finnegan.com

On March 14, 2003, the parties filed a revised Joint Claim Construction and
Prehearing Statement, which includes Exhibits A-l. See Exhibit 1.

On April 7, 2003, InterTrust filed a Memorandum of Points and Authorities of
Plaintiff InterTrust Technologies in Opposition to Microsoft Motion for Summary
Judgment on Indefiniteness and in support of Cross-Motion for Summary Judgment.
See Exhibit 2. Also on April 7, 2003, Microsoft filed its Markman Brief. See Exhibit 3.

On April 21, 2003, InterTrust filed its Reply Memorandum on Claim Construction.
See Exhibit 4. Also, on April 21, 2003, Microsoft filed a Reply to InterT rust's Opposition
to Microsoft's Brief in Support of Motion for Summary Judgment That Certain "Mini-
Markman" Claims are Invalid for Indefiniteness. See Exhibit 5.

On July 3, 2003, Judge Saundra Brown Armstrong issued an Order Denying
Motion for Partial Summary Judgment and Construing "Mini- Markman " Claims. See
Exhibit 6.

Applicants submit this Second Updated Notice Regarding Related Litigation, as
well as the previous two Notices Regarding Related Litigation, in fulfillment of their duty
to disclose information material to patentability under 37 CFR 1 .56.

Applicants encourage the Examiner to read the attached documents, particularly
the Court's July 3, 2003 Order. Applicants wish to point out that, in the Order dated July
3, 2003, Judge Armstrong denied Microsoft's Motion for Summary Judgment, also
referred to in the Order as the "Indefiniteness Motion." Ex. 6 at 1. Microsoft had argued

REMARKS

F I N N EC AN
HENDERSON
FARABOW
GARRETT &
DUNNERL.LP

1 300 I Street, NW
Washington, DC 20005
202.408.4000
Fax 202.408.4400
www.finneganxom

that InterTrust claims that use the terms "secure," "protected processing environment,"
or "host processing environment" were invalid as indefinite. Id. at 4-5.

The Court also construed several terms and phrases at issue in the litigation,
including: (1) aspect; (2) authentication; (3) clearinghouse; (4) compares; (5) derive; (6)
designating; (7) device class; (8) digital signature / digital signing; (9) digitally signing a
second load module with a second digital signature different from the first digital
signature, the second digital signature designating the second load module for use by a
second device class having at least one of tamper resistance and security level different
from the at least one of tamper resistance and security level of the first device class;
(10) executable programming / executable; (1 1 ) identifying at least one aspect of an
execution space required for use and/or execution of the load module; (12) Virtual
Distribution Environment (VDE); (13) budget; (14) a budget specifying the number of
copies which can be made of said digital file; (15) component assembly; (16) contain;
(17) control; (18) controlling; (19) controlling the copies made of said digital file; (20)
copy, copied, copying; (21) derives information from one or more aspects of said host
processing environment; (22) Host Processing Environment (HPE); (23) identifier; (24)
Protected Processing Environment (PPE); (25) secure, securely; (26) secure container;

(27) securely applying, at said first appliance through use of said at least one resource
said first entity's control and said second entity's control to govern use of said data item;

(28) tamper resistance; (29) tamper resistant barrier; and (30) use. For the Court's
construction of these terms, the Examiner is directed to pages 21-55 of the Order.
Applicants wish to point out that with regard to most, if not all, construed claim terms,
the Court adopted constructions substantially similar to those proposed by InterTrust.

•

+

But again, Applicants encourage the Examiner to confirm for himself the Court's
construction of these and other terms.

With this Notice, Applicants have provided copies of some of the exhibits referred
to in the provided papers. However, due to the voluminous number of documents
referred to by these and previously provided papers, all attachments and exhibits have
not been provided. If the Examiner believes a reference or a document not yet
submitted may be helpful in resolving an issue before him and would like to review that
or any other document, Applicants invite the Examiner to contact the undersigned at
(650) 849-6643.

If there are any fees due with the filing of this Notice which have not yet been
paid, please charge the fees to our Deposit Account No. 06-0916.

F I N N EG AN
HENDERSON
FARABOW
GARRETT &
DUNNERLLf

1300 I Street, NW
Washington, DC 20005
202.408.4000
Fax 202.408.4400
www.finnegan.com

Respectfully submitted,

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.

Dated: July 31, 2003

Kama J. Nisewaner
Reg. No. 50,665